Educational Testing Service v. ESL Pro
Systems
Claim Number: FA0602000651487
PARTIES
Complainant is Educational Testing Service (“Complainant”), represented by Lile H. Deinard, of Dorsey & Whitney
LLP, 250 Park Avenue, New York, NY 10177.
Respondent is ESL Pro Systems (“Respondent”),
P.O. Box 190, Point Roberts, WA 98281-190.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tofel.us>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Tyrus R. Atkinson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 27, 2006; the Forum received a hard
copy of the Complaint on March 1, 2006.
On February 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the Forum that the domain name <tofel.us>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 23, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On March 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Tyrus R. Atkinson, as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <tofel.us> domain name is confusingly similar to Complainant’s TOEFL mark.
2.
Respondent does not have any rights or legitimate
interests in the <tofel.us> domain name.
3.
Respondent registered and used the <tofel.us>
domain name in bad faith.
B. Respondent failed to submit
a Response in this proceeding.
FINDINGS
Complainant, Educational Testing Service, is
the leading developer and administrator of tests measuring skills, academic
aptitude and achievement, and occupational and professional competency for
individuals seeking preparatory school, college, and graduate school
admission. In connection with the
provision of these services, Complainant has registered numerous marks
including the TOEFL mark, which is registered with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,103,426 issued October 3, 1978).
Respondent registered the <tofel.us> domain name on
August 3, 2005. Respondent’s disputed
domain name resolves to a website that features commercial links as well as the
unauthorized reproduction of Complainant’s mark.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has established rights in the TOEFL mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
contends that Respondent’s <tofel.us> domain name is
confusingly similar to Complainant’s mark.
Respondent’s disputed domain name features a misspelled variation of
Complainant’s TOEFL mark in which the letter “e” and the letter “f” are
transposed. The Panel finds that
transposing letters in an otherwise identical mark fails to properly
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”); see also Pier
1 Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to the complainant's PIER 1 mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that
Respondent does not have rights or legitimate interests in the <tofel.us>
domain name. Once Complainant makes a prima
facie case in support of its allegations, a rebuttable presumption exists
that Respondent lacks rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Furthermore, the burden
shifts to Respondent to show otherwise.
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have rights or legitimate interests with
respect to the domain name, it is incumbent on respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence). However, the Panel chooses to analyze whether
the evidence supports rights or legitimate interests.
Respondent has failed to set forth evidence showing trademark rights in the <tofel.us> domain name. As a result, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). Moreover, Complainant contends that Respondent is using the confusingly similar <tofel.us> domain name to operate a website that features Complainant’s mark in addition to commercial links to other websites from which Respondent presumably receives referral fees. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s mark or any variation thereof. Without evidence to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(iii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent’s use of the <tofel.us> domain name to
operate a website linking Internet users to Complainant’s competitors will
likely cause confusion as to Complainant’s sponsorship of and affiliation with
the resulting website. As such the
Panel finds that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”). What is more,
Respondent is presumably generating revenue in the form of “click-through” fees
as a result of this confusion. Such use
for commercial gain is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Finally, the Panel finds that
Respondent had actual knowledge of Complainant’s rights in the TOEFL mark due
to the obvious similarity between Respondent’s website and Complainant’s line
of business. Registration of
confusingly similar domain names with knowledge of Complainant’s rights is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tofel.us> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: April 12, 2006
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